The Kerala High Court, in FAO No.118 of 2025 (2025:KER:87639), has reiterated the statutory strength of a registered trade mark and clarified that courts must grant protection against infringement once identity of mark and goods is established, without delving into issues such as descriptiveness, prior user, or reputation at the interim stage.
Background of the Dispute
The appellant, proprietor of M/s Global Pharmaceuticals, is the registered owner of the trade mark “BOKASHI BUCKET”, used for compost bins that convert biodegradable waste into manure within a short period. The appellant also holds a registered design for the product and claimed wide commercial acceptance, including procurement by Suchitwa Mission and local self-government bodies.
Alleging that the respondent was manufacturing and selling identical compost bins using the same trade mark, the appellant instituted a suit for infringement and passing off before the Additional District Court, Manjeri, along with an application for temporary injunction. Though an ad-interim injunction was initially granted, it was later vacated by the trial court, prompting the appeal.
Trial Court’s Findings
The trial court dismissed the injunction application on the grounds that:
the appellant failed to establish a prima facie case,
the term “BOKASHI BUCKET” was descriptive and generic,
balance of convenience was not in favour of the appellant, and
no irreparable injury would be caused.
Core Issue Before the High Court
Before the High Court, the appellant narrowed the challenge strictly to infringement of a registered trade mark, relying on statutory rights under Sections 28 and 29 of the Trade Marks Act, 1999. The central question was whether, despite pending rectification proceedings, a registered proprietor is entitled to interim protection when the defendant uses an identical mark for identical goods.
High Court’s Analysis
Justice S. Manu held that:
The appellant’s trade mark registrations for “BOKASHI BUCKET” were valid and subsisting.
Mere filing of a rectification application does not suspend or nullify an existing registration.
Rule 98 of the Trade Marks Rules, 2017 does not provide for automatic cessation of registration due to delay in filing a counter-statement.
The Court relied heavily on the Supreme Court’s ruling in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai [(2022) 5 SCC 1], reaffirming that in cases falling under Section 29(2)(c)—where the mark and goods are identical—the court must presume likelihood of confusion under Section 29(3).
The High Court clarified that:
In infringement actions, unlike passing-off cases, differences in packaging, branding, or get-up are irrelevant.
Once identity of the registered mark and the goods is established, injunction follows as a matter of course.
Decision
Setting aside the trial court’s order, the High Court allowed the appeal and restored the temporary injunction. The respondent was restrained from manufacturing, selling, or promoting compost bins using the trade mark “BOKASHI BUCKET” until disposal of the suit.
Significance of the Ruling
This judgment reinforces several settled but often diluted principles of trade mark law:
Registration confers exclusive statutory rights that remain enforceable until cancelled.
Pending rectification proceedings do not weaken interim protection.
Courts should not examine descriptiveness, reputation, or market confusion once infringement under Section 29(2)(c) is established.
The ruling serves as a strong reminder that registered trade marks enjoy near-absolute protection at the interim stage, preserving commercial certainty and discouraging unauthorized use during prolonged litigation